Appeal Number: 2007-0133
Application Number: 10/223,466
Federal Circuit has never stated that this is the general test for patent eligibility. In
other words, any claim that might arguably yield a “useful, concrete, and tangible
result” is not necessarily statutory subject matter.
Specifically, the “useful, concrete, and tangible result” test first appeared in
Alappat, which states: “This [claimed invention] is not a disembodied
mathematical concept which may be characterized as an ‘abstract idea,’ but rather
a specific machine to produce a useful, concrete, and tangible result.” Id., 33 F.3d
at 1544. The Court in Alappat thus devised a standard to partition patentable
inventions using mathematical algorithms from claims for disembodied
mathematical concepts. State Street also involved claims to a machine employing
a mathematical algorithm, but in this instance for managing a mutual fund
investment portfolio. Finding the claim to be valid under § 101, State Street held
that “transformation of data Y by a machine through a series of mathematical
calculations into a final share price, constitutes a practical application of a
mathematical algorithm, formula, or calculation, because it produces ‘a useful,
concrete and tangible result.’“ Id. at 1373. Likewise, AT&T also ties this test to
applications of mathematical algorithms: “Because the claimed process applies the
Boolean principle to produce a useful, concrete, and tangible result without pre-
empting other uses of the mathematical principle, on its face the claimed process
comfortably falls within the scope of § 101.” AT&T, 172 F.3d at 1358; see also id.
at 1361 (concluding that “the focus is understood to be not on whether there is a
mathematical algorithm at work, but on whether the algorithm-containing
invention, as a whole, produces a tangible, useful result.”).
However, the Federal Circuit has never suggested that its “useful, concrete,
and tangible result” test was applicable outside the context of data transformation
using a mathematical algorithm. Rather, the Federal Circuit has consistently and
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